Trademark Opposition

In Myanmar, under Trademark Law 2019, an opposition for a trademark can be filed with the registrar, the Department of Intellectual Property (DIP). For the opposition of the trademark, any person who wants to oppose the registration of the trademark shall, within 60 days from the date of trademarks journal publication, file a notice of opposition with the registrar. The trademark can be filed for opposition based on the grounds that a mark is lack of distinctiveness, descriptiveness, identical with or similar to an already registered mark, or is likely to mislead the public. 

Filing and Time Limit  for Opposition

Any third party can oppose the application for trademark registration by filing the necessary documents with the registrar. An opposition shall be filed within the prescribed time period of 60 days from the date of the trademarks journal publication is made available to the public. There's no time extension for the opposition period.

Conditions for Opposition

Trademark can be opposed based the following grounds stated in Sec 13 and 14 of the Trademark Law 2019 as below : 

·      Non-distinctiveness;

·      descriptiveness;

·      being identical with or similar to a well-known mark;

·      being identical or similar to a registered mark in the name of a different person;

·      filing the mark in bad faith;

·      affecting the public order, morality, faith and conscience, integrity of the State, or venerated culture, and cherished customs of ethnic groups of the State;

·      becoming the generic or customary in the current language or in the bona fide and established practices of the trade;

·      misleading the public or trade circle;

·   consisting of the total or partial reproduction or imitation of a flag, armorial bearings, or other emblems adopted by a State or an international intergovernmental organization;

·      using the emblems protected under international treaties to which the State is a contracting party;

·      using the mark affecting personality rights of a person or the reputation of the legal entity without the permission of the relevant person or legal entity; and

·      being the mark that infringes the copyright or industrial property right of a third person.

An opposition shall be filed based on the above-mentioned grounds.

Requirements and Procedures for Opposition

Within the 60 days after the publication of the mark in the Trademarks Journal, any person can oppose the registration of the mark by submitting the prescribed form (Form TM-8) to the registrar, along with the prescribed fee.  A notarized Representative Form (TM-2) is required if an opponent is being represented by a Myanmar trademark representative. The notice of opposition shall include the allegations for the above-mentioned grounds for opposition, and evidence should be attached with the notice to support the opposition. 

The Notice of Opposition should include as below:

• The trademark number;
• Name of the applicant for registration;
• Name, passport number or the Company’s registration number and address of the opponent;
• Class Number and List of the goods or services against which the opposition is directed
• Grounds of opposition relied upon;
• A notarized Representative Form (TM-2) ; and
• The official prescribed fee.

When the opposition is filed, the registrar will review the necessary formalities and notify the opponent whether it is accepted or not. If accepted, the registrar will notify and send a copy of the notice of opposition to an applicant for counter-statement. A counter-statement must be filed within 60 days of receiving a notification of it by the applicant. The applicant should include evidence in their document to support their counter-statement.  

If the registrar requests additional evidence, the parties have to provide the required documentation to support their case. The registrar will make a decision based on the statements and evidence provided. If the parties disagree with the registrar's decisions, they can file an appeal with IP's Agency. In addition, they can further appeal with the IP Court, if the parties do not agree with the decisions made by the IP’s Agency.

In conclusion, an opposition to a trademark can be filed by any person or entity who believes that the registration of a published trademark would adversely impact them or cause them commercial damage. The trademark can be opposed under the above-mentioned grounds with registrar, DIP by any third party .

We can assist you in monitoring publications, drafting and preparing opposition letters or counter-statements, and advising on the opposition's chances of success.

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